(170) Addition of Japan Patent Office as
Participating Foreign Intellectual Property Office in
Electronic Exchange of Priority Documents
In January 2007, the United States Patent and Trademark Office (USPTO)
implemented a procedure for direct electronic priority document exchange
with participating foreign intellectual property offices. See Changes to
Implement Priority Document Exchange Between Intellectual Property Offices,
72 FR 1664 (January 16, 2007), 1315-2 Off. Gaz. Pat. Office (Feb. 13, 2007)
(final rule) (hereinafter "Priority Document Exchange Final Rule"). The
USPTO established agreements to obtain and provide priority documents with
the European Patent Office (EPO) in January 2007.
Effective on July 28, 2007, the Japan Patent Office (JPO) will become
the second foreign intellectual property office participating with the
USPTO in a priority document exchange agreement (participating foreign
intellectual property office). See 37 CFR 1.14(h) and 1.55(d). Thus, the
USPTO will have the ability to begin electronically retrieving JPO priority
documents from the JPO through the Priority Document Exchange (PDX) system.
Similarly, the JPO will also gain the ability to electronically retrieve US
priority documents from the USPTO through the PDX system.
US Applications filed on or after July 28, 2007
For US applications filed under 35 U.S.C. 111(a) on or after July 28,
2007, the USPTO will automatically attempt to electronically retrieve a
copy of any JPO priority document without the need for the applicant to
file a request to retrieve in a separate document (e.g., form PTO/SB/38)
if the US application claims foreign priority to the JPO application and
identifies the JPO application in the oath or declaration under 37 CFR
1.63(c) or in an application data sheet under 37 CFR 1.76. The USPTO
already automatically attempts to electronically retrieve a copy of any EPO
priority document to which priority is claimed in a US application filed
under 35 U.S.C. 111(a). See the Official Gazette notice entitled
"Simplification of the Electronic Exchange of Priority Documents" published
on June 26, 2007. In these situations, the requirement under 37 CFR
1.55(d)(1)(i) that the applicant file a request to retrieve, in a separate
document, for the USPTO to obtain a copy of the foreign application is
waived and the requirement for the certified copy of the foreign
application is considered satisfied if the requirements of 37 CFR
1.55(d)(1)(ii) and (iii) are met.
Thus, if an applicant files a US application under 35 U.S.C. 111(a) on
or after July 28, 2007 claiming priority to a prior-filed JPO (or EPO)
application that is identified in the oath or declaration under 37 CFR 1.63
or in an application data sheet under 37 CFR 1.76, the USPTO will
automatically attempt to electronically retrieve a copy of that JPO (or
EPO) application through the PDX system regardless of whether or not the
applicant has filed a retrieval request under 37 CFR 1.55(d)(1)(i) in a
separate document (e.g., form PTO/SB/38). If the copy of the JPO (or EPO)
application is then received by the USPTO within the period set forth in 37
CFR 1.55(a) (e.g., prior to the payment of the issue fee), the requirement
under 37 CFR 1.55 for a certified copy of the foreign priority application
will be considered satisfied.
Retrieval may not be effected until several months after the filing of a
qualifying new US application.
US Applications filed prior to July 28, 2007
If an applicant wishes the USPTO to retrieve a copy of a JPO priority
document through the PDX system for a US application filed prior to July
28, 2007, the applicant must file a request to retrieve (e.g., form
PTO/SB/38) in a separate document under 37 CFR 1.55(d)(1)(i) requesting
that the USPTO retrieve a copy of the JPO priority document. Form PTO/SB/38

entitled "Request to Retrieve Electronic Priority Application(s)" is
available for making such a request in accordance with 37 CFR 1.55(d)(1)(i)
from the USPTO website at http://www.uspto.gov/web/forms/sb0038.pdf. Any
such request to retrieve a JPO priority document through the PDX system
should be filed on or after July 28, 2007, the effective date for PDX
agreement between the USPTO and JPO. Any requests to retrieve (e.g., form
PTO/SB/38) that are filed prior to July 28, 2007 will not be recognized by
the USPTO as a valid retrieval request under 37 CFR 1.55(d)(1)(i).
Requests for Non-Participating Office Priority Documents under 37 CFR
1.55(d)(2)
The USPTO will not have the ability to electronically retrieve
non-participating office priority documents from the JPO under 37 CFR
1.55(d)(2). For example, if the applicant files a Korean priority document
with the JPO in a JPO application, the USPTO will not have the ability to
electronically retrieve the Korean priority document from the JPO through
the PDX system. However, this service continues to be available through the
EPO. Thus, for example, if an applicant wishes the USPTO to retrieve a copy
of a German priority document that has been made of record in an EPO
application file, the applicant must file a request to retrieve in a
separate document (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) and
provide the USPTO with the EPO application number from which the German
priority document may be retrieved. See the Official Gazette notice
entitled "Simplification of the Electronic Exchange of Priority Documents"
published on June 26, 2007.
Additional Information Regarding Requests to Retrieve Under 37 CFR 1.55(d)
The USPTO will not retrieve copies of priority applications filed in US
national stage applications under 35 U.S.C. 371 unless the applicant files
a separate request to retrieve (e.g., form PTO/SB/38) under 37 CFR
1.55(d)(1)(i) since the USPTO already, in most cases, receives copies of
such priority applications from the International Bureau in accordance with
PCT Rule 17.2.
The following text will be included on the filing receipt of an
application in which: (1) applicant filed a proper request to retrieve
(e.g., form PTO/SB/38), but the USPTO has not retrieved the foreign
priority document through the PDX system prior to the mailing of the filing
receipt; or (2) the USPTO successfully retrieves a foreign priority
document through the PDX system prior to the mailing of the filing receipt,
regardless of whether or not the applicant actually filed a request to
retrieve (e.g., form PTO/SB/38):
"A proper Request to Retrieve Electronic Priority Application(s) has been
received by the USPTO."
The USPTO is working to revise the PDX system to provide more accurate
language on the filing receipts but this may take several months to
accomplish.
Applicants continue to bear the ultimate responsibility for ensuring
that the priority document is filed by the time of patent grant as required
under 37 CFR 1.55(a). Accordingly, applicants are encouraged to check
Private PAIR as necessary to confirm receipt of appropriate documents.
Priority documents retrieved from the JPO or EPO will bear the IFW document
title of "Priority documents electronically retrieved by USPTO from a
participating IP Office."
Sending US Priority Documents to the JPO (or EPO)
In similar fashion, if a JPO (or EPO) application claims foreign
priority to a US provisional or nonprovisional application, the JPO (or
EPO) will automatically attempt to retrieve an electronic copy of the US
application. However, the USPTO will release copies of US

applications-as-filed to the JPO (or EPO) only if the US priority
application has received a foreign filing license in accordance with 37
CFR 5.11 and: (1) the applicant of the US application provided an
appropriate written authority to permit access to application by
participating offices (e.g., form PTO/SB/39) under 37 CFR 1.14 and 35
U.S.C. 122 (if the US application has not yet been published); or (2) the
US application has been published or patented. Written authority under 37
CFR 1.14 and 35 U.S.C. 122 may be provided by filing a properly signed
"Authorization to Permit Access to Application by Participating Offices"
(Form PTO/SB/39) in a US provisional or nonprovisional application. Form
PTO/SB/39 is available from the USPTO website at
http://www.uspto.gov/web/forms/sb0039.pdf
Form PTO/SB/39 has been updated to indicate that the authorized party
signing the authorization grants the USPTO authority to provide: (1) the
EPO, (2) the JPO, and (3) any other intellectual property offices in which
a foreign application claiming priority to the applicant's identified US
application is filed, with access to 1) the applicant's identified US
application, 2) any foreign application to which the identified US
application claims priority under 35 USC 119(a)-(d) if a copy of the
foreign application that satisfies the certified copy requirement of 37 CFR
1.55 has been filed in the identified US application, and 3) any US
application from which benefit is sought in the identified US application.
This revision to the form will allow the USPTO to provide both the EPO and
the JPO with copies of the identified US application to which priority is
claimed in EPO and JPO patent applications at no charge to the applicant.
This revision will also enable the USPTO to provide copies of the
identified US priority application to any new participating intellectual
property offices. However, the EPO and the JPO are currently the only
participating intellectual property offices. Accordingly, at this time, the
USPTO will only provide copies of US priority applications to the EPO
and/or JPO.
The revised form PTO/SB/39 (revision 06/07) supercedes the previous
version of the form PTO/SB/39, which only named the EPO as a participating
intellectual property office. Accordingly, applicants are advised to adopt
immediate use of the revised form PTO/SB/39 (revision 06/07), as any future
use of the previous version of the form may be deemed ineffective for any
requests from the JPO.
Applicants are advised that JPO (and EPO) regulations require a copy of
a priority document to be filed with the corresponding JPO (or EPO)
application no later than 16 months from the priority date. Because US
applications are ordinarily published by the USPTO after the time period of
18 months from filing, most US applications that are the basis for a
foreign priority claim in a JPO (or EPO) application will not be published
at the time the applicant is required to provide a copy of the US
application to the JPO (or EPO). This means that in most cases it will be
necessary to provide the USPTO with appropriate written authorization
(under 35 U.S.C. 122 and 37 CFR 1.14) for the JPO (or EPO) to access the US
application and obtain a copy, e.g., by submitting a properly signed Form
PTO/SB/39. APPLICANTS ARE STRONGLY ENCOURAGED TO FILE WRITTEN AUTHORITY IN
ACCORDANCE WITH 37 CFR 1.14 AND 35 U.S.C. 122 FOR US APPLICATIONS IN WHICH
THERE IS ANY CHANCE THAT THEY WILL FILE A SUBSEQUENT COUNTERPART JPO OR EPO
APPLICATION SO THAT THOSE PARTICIPATING FOREIGN INTELLECTUAL PROPERTY
OFFICES MAY TIMELY AND SUCCESSFULLY RETRIEVE THE US PRIORITY DOCUMENT AT NO
CHARGE TO THE APPLICANT.
There continues to be no fee for this service.
Future Developments
The EPO and USPTO are currently developing an enhancement to the PDX
system that will simplify the process for retrieving copies of
non-participating office foreign priority documents under 37 CFR
1.55(d)(2). The enhancement will enable the USPTO to retrieve any priority

document originally filed in a non-participating office that is contained
in the dossier of an EPO patent application without the need to identify
the EPO application number specifically. This enhancement is expected to be
implemented in mid 2008. Accordingly, it is expected that as of mid 2008
the USPTO will no longer require a request to retrieve in a separate
document (e.g., form PTO/SB/38) from the applicant before attempting to
electronically retrieve priority documents originally filed in a
non-participating office. However, the USPTO will only have the ability to
electronically retrieve non-participating office priority documents from
the EPO not the JPO.
For further information please contact one of the individuals identified
below:
DEBBIE KYLE DIANA OLEKSA
TDA Project Manager Legal Advisor for IT Policy
US Patent and Trademark OR US Patent and Trademark
Office Office
571-272-3785 571-272-3291
PDX@uspto.gov PDX@uspto.gov
JOHN J. LOVE
Deputy Commissioner for Patent Examination Policy
United States Patent and Trademark Office
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